Guardians Roller Derby Team Sues Cleveland Indians over Proposed Name Change, Fearing Consumer Confusion

A Cleveland-based roller derby team, the “Guardians,” sued Cleveland’s Major League Baseball team to prevent it from using the same name. The Cleveland baseball team initially filed the trademark application in Mauritius in April 2021 and then revealed the name change in July 2021. IP Law Daily interviewed Finnegan partner Mark Sommers for insight on the trademark dispute.

Mark explained the possible strategy behind filing in Mauritius before filing in the United States:

“By first filing the ‘CLEVELAND GUARDIAN’ trademark application in Mauritius in April 2021, the team largely delayed the publicity that filing a trademark application with the USPTO would generate. U.S. trademark applications are visible to the public shortly after filing (for free), whereas searching the trademark register in Mauritius generally involves a fee…”

“When the team publicly announced on July 23, 2021, that its new name would be the Cleveland Guardians, it simultaneously filed a U.S. trademark application for the mark CLEVELAND GUARDIANS, claiming priority based on its application filed in Mauritius.”

However, Mark noted that while the baseball team’s strategy of filing in Mauritius might have helped with the public announcement of the new name, because of the roller derby team’s alleged “priority of trademark rights based on its common law rights,” the strategy might offer no legal relief.

Read “Guardians Roller Derby Team Sues Cleveland Indians over Proposed Name Change, Fearing Consumer Confusion”